USPTO and UKIPO Progress Report on Worksharing Initiative

On November 10, 2010, the United States Patent and Trademark Office  (USPTO) and the United Kingdom Intellectual Property Office (UKIPO) initiated a work sharing arrangement whereby each office would utilize the work product (i.e., search and examination results) of the other office.  By sharing work product and relying, at least in part, on the efforts of another office it was believed that the patent process could be expedited and the growing backlog of patent applications alleviated by not having to re-invent the wheel (so to speak).  Specifically, the program sought to increase the efficiency of the patent application process and improve quality in the examination process.

In order to assess the success of the program the USPTO and UKIPO collaboratively developed an examiner survey designed to empirical data to be used for assessing the impact of work sharing on both efficiency and quality.  Examiners from both the USPTO and UKIPO were asked to complete the survey, and the preliminary report that presents the results from these surveys was released earlier today.

Here are some of the interesting findings from the examiner surveys:

Regarding Usefulness of Prior Art

• In 59% of cases UKIPO examiners found the USPTO prior art search to be “at least useful.”
• In 65% of cases examiners found the USPTO substantive examination to be “at least useful.”
• 44% of USPTO examiners thought that the work provided by UKIPO was useful to a “great or moderate extent.”
• In 42% of the selected applications USPTO examiners applied art that was cited in UKIPO actions.
• USPTO examiners found more references when searching, and UKIPO examiners deemed these citations useful, with UKIPO examiners citing an average of 1.6 more documents per case.

Regarding Conclusions

• In 66% of cases considered, examiners at the UKIPO came to at least some of the same conclusions as the USPTO examiner on novelty, with 50% being in full agreement.
• In 63% of the USPTO applications, examiners came to at least some of the same conclusions as the UKIPO examiner on novelty.  Of those, 20% were in full agreement.

Regarding Inventive Step

• In 55% of UKIPO applications, examiners came to at least some of the same conclusions as the USPTO examiner on inventive step, with 30% being in full agreement.
• In 64% of the USPTO applications, examiners came to at least some of the same conclusions as the UKIPO examiner on inventive step.  Of those, 21% were in full agreement.

It was interesting to read that UKIPO examiners believe it was too time-consuming to take into consideration USPTO work product “especially if the USPTO examiner took a different view from the UKIPO examiner.”  The report does, however, state the obvious based on the survey results: “[A]n analysis of the data reveals that UKIPO examiners frequently cited extra documents upon considering U.S. work products, suggesting that the quality of UKIPO patents granted is improved as a result of work sharing.”

The thing that struck me most from these survey results was the superiority of USPTO searches.  I’m sure you have heard the same criticisms and joking that I have.  Many, particularly Europeans, love to criticize and even make fun of the searches done by the USPTO.  If anything these survey results suggest that the USPTO does a better search than is done in the UKIPO.  After all, under UKIPO practice, examiners only cite extra documents if they are more relevant than those already found by the UK search.  So when they rely on US references that means they must have been more relevant than what they found.  So much for the alleged inferiority of USPTO searches.

Interestingly, the survey also shows that the claims going from the USPTO into the UKIPO are far more likely to be identical or substantially similar than those claims coming from the UKIPO into the USPTO.

Taking into account the similarity of claims and the fact that USPTO searches seem more useful to the UKIPO, it would seem that the UKIPO derives greater benefit from the work-sharing arrangement than the USPTO.

So where do we go from here?  The report explains that further cooperation is necessary, and explains:

The preliminary results suggest that further cooperation should be  undertaken to explore the differences in practice between the Offices,  particularly regarding novelty and inventive step/non-obviousness.  Collaboration on these issues could facilitate a deeper understanding  among examiners and help to close gaps, in turn leading to more effective reutilization of work products.

Primarily two specific recommendations that came from this progress report on the USPTO-UKIPO work sharing initiative.  They are:

1. The USPTO and UKIPO should continue their work sharing cooperation, with a focus on increasing examiner understanding of each Office’s practice.
2. The USPTO and UKIPO should engage stakeholders to identify best practices for leveraging the benefits of work sharing in reducing costs and delays in prosecuting corresponding patent applications.

As I sit here and read this I can’t help but search for the meaning behind the words.  International negotiation on streamlining the patent process has uniformly focused on demands for the United States to do things differently.  Typically there is lip-service paid to the establishment of “best practices,” but the reality is that those best practices never seem to incorporate the way the patent process is handled in the United States.  Rather, the European and world-wide view of best practices is that their way is superior and the Americans just need to get on board.  But the indifference of the UKIPO examiners even in the wake of USPTO examiners finding more prior art suggests to me that perhaps it is time for Europe to get on board with the US, not the other way around.

Perhaps I am making too much out of this, but “explore the differences in practice… particularly regarding novelty”?  Let’s be honest with each other for a moment.  There doesn’t need to be any exploration of the differences.  We all know what the differences are and it seems ridiculous to suspect that patent examiners in the USPTO and patent examiners in the UKIPO don’t understand the differences.  The differences are well known by everyone.  The United States allows for a grace period under 102(b) and the rest of the world follows an absolute novelty rule that allows for no grace period.

What the Europeans want is for the United States to do away with the grace period altogether.  Truthfully no one should rely on the grace period.  Filing early is always preferable and preserves foreign rights.  Too many people misunderstand the grace period, which is not a personal grace period at all.  If anyone publicly uses or sells more than 12 months before the filing of a patent application all ability to obtain a patent is lost.  But how do you know what others have done publicly or whether they have sold?  Precisely why filing early is always better.  Nevertheless, I find the European and world-wide view condescending.  Exactly what is wrong with the grace period providing a safety net?  In the United States many great inventions come from first time inventors who are not knowledgeable about the patent laws and requirements.  What is the harm in having a safety net to protect them?  Nothing — unless of course your laws and systems are set up to favor large corporations instead of innovators and start-up businesses.

Until the enactment of the America Invents Act the United States has always had a patent law that places independent inventors, small businesses and start-ups on at least equal footing with large corporations.  This matches the U.S. approach to small businesses, which employ approximately 70% of those with jobs in the United States.  This is not the European experience though.  In Europe large corporations dominate the landscape.  Thus, it is frustrating to me to constantly be told we need to become more like Europe and the rest of the world.  If we do our economy substantially changes and if you haven’t noticed countries in Europe are in tremendous financial turmoil, not having weathered this recent economic downturn very well at all.

Simply, when the U.S. economy catches a cold the European economy catches the flu.  So why is it that we want to become more European again?